Whether and How to Appeal a PTO Final Refusal: TTAB and Beyond

Transcription

1 Presenting a live 90-minute webinar with interactive Q&A Whether and How to Appeal a PTO Final Refusal: TTAB and Beyond Navigating Ex Parte Appeals, Civil Actions in District Court, and Appeals to the Federal Circuit TUESDAY, FEBRUARY 10, pm Eastern 12pm Central 11am Mountain 10am Pacific Today s faculty features: Jess M. Collen, Partner, Collen IP, Ossining, N.Y. Helen Hill Minsker, Esq., Banner & Witcoff, Chicago John L. Welch, Of Counsel, Lando & Anastasi, Boston The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions ed to registrants for additional information. If you have any questions, please contact Customer Service at ext. 10.

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5 Whether & How to Appeal a PTO Final Refusal The TTAB & Beyond Helen Hill Minsker 2015 Helen Hill Minsker

6 Getting the Case Ready for the TTAB Responding to a Final Office Action/ Requests for Reconsideration Ex Parte Appeals to TTAB 6

7 When is Case Ripe for Appeal? After a Final office action is issued; or After second refusal on same ground is made, even if the office action is not Final 7

8 Responding to Final Office Actions: Requests for Reconsideration - Friend or Foe? Friend, if you need to add evidence into the record to bolster chances of success on appeal; Friend to extent it shows Examining Attorney resolve to fight that may make him/her reluctant to defend refusal on appeal 8

9 Foe To the extent it gives the Examining Attorney more opportunities to shore up refusal Bottom Line: THINK before filing request for reconsideration 9

10 Extreme Example In Re Bottega Veneta (TTAB 2013) (SN 77/219184) 10

11 Application pending for years Various issues including utilitarian and aesthetic functionality, distinctiveness, ornamentation 4 office actions last one Final OA Examining Attorney put in 1100 pages of evidence in support of Final OA 11

12 Victory for Applicant, But Short Lived TTAB reversed Examining Attorney s refusal preference to allow mark to be published if objection is 2(e)/functionality But, TTAB required fairly narrow/ detailed description of mark Registration now being opposed 12

13 When to Use Request for Reconsideration Need to get more evidence in record Need to respond to any outstanding issues (Don t forget to respond to all issues, even formalities, before filing appeal) 13

14 Completing the Record Evidentiary record must be complete at time of appeal General rule is you can t introduce evidence not in record below (but there are some exceptions) 14

15 Strategy for Reconsideration Make an honest assessment of your case For 2(d), have you addressed all the relevant DuPont factors? Is there a way to challenge the sufficiency of Examining Attorney s evidence? 2(f) Is there MORE you can submit? 15

16 Evidentiary Considerations Is evidence properly of record (for example, copies of registrations/pto records, Internet references, declarations) TTAB more forgiving on form of evidence for ex parte appeals than with inter partes cases, but there are limits 16

17 Case Study Example of Good Use of 3d Party Registrations In Re Thor Tech, Inc. (TTAB 2015) (SN ) TERRAIN for recreational vehicles, namely towable trailers TERRAIN for motor vehicles, namely, trucks 17

18 Thor Tech. KEY: Examining Attorney submitted 7 registrations with trucks/trailers in goods; Applicant submitted 50 pairs of registrations for substantially identical marks for land motor vehicles v. towable recreational vehicle trailers 2(d) Refusal Reversed 18

19 Know your forum! Procedural issues must be addressed in Petition to Commissioner Substantive issues in ex parte appeal 19

20 Should You Appeal to TTAB??? If the request for reconsideration fails, should you appeal to TTAB? Consider practical v. tactical issues 20

21 Most Common Issues for Appeal Section 2(d) Likelihood of confusion Section 2(e)/(f) Range of descriptive objections, surname, geographic, generic, functional and sufficiency/ appropriateness of Section 2(f) - acquired distinctiveness claim 21

22 Sobering Statistics: Consistently an 80% to 90% affirmance rate Some variance depending on the issue on appeal, e.g. 2(d), 2(e) or other issues, but almost always within the range of 80% to 90% 22

23 3 Rules to Remember 1. Only strong cases need apply. 2. Procedure/Timing is often as important as substance. 3. Argument is no substitute for evidence. 23

24 Exception #1 Not all ex parte appeals are created equal Chances of success may vary based on subject matter of appeal (e.g. descriptiveness versus likelihood of confusion) 24

25 Exception #2 Many Ex Parte Appeals are filed due to a non-extendable deadline but may be dropped before decision on merits, or may be resolved favorably for applicant after going back for request for reconsideration 25

26 Before Filing Appeal Are you better off appealing and losing or not filing appeal at all? (i.e., Do you really want an opinion on the merits by an expert tribunal?) Are there acceptable alternatives to appeal, such as 26

27 1. Amending to Section 2(f) to claim acquired distinctiveness 2. Amending to Supplemental Register 3. Entering a disclaimer 27

28 4. Re-applying to register mark in stylized form or with design 5. Obtaining a consent agreement 6. Some combination of the above 28

29 Other Options Is time on your side (i.e., can mark acquire distinctiveness)? Or is it now or never (no acceptable alternative; mark important enough to justify appeal). 29

30 On some occasions The Examining Attorney is just flat wrong, so each case has to be reviewed on its own merits 30

31 And sometimes you get lucky See, In re Truck-Lite Co., Inc. (TTAB 1/26/06) (Unpublished) Refusal under Section 2(e)(1) to register SUPER for vehicle lights reversed (SN 76/532510) 31

32 However Statistics suggest that luck is rarely on the side of the Applicant (See, e.g., In re Positec Limited (TTAB 9/13/13), in which registration of SUPERJAWS was refused and the TTAB commented that SUPER was merely descriptive, notwithstanding earlier registrations) 32

33 Rule #1: Only Strong Cases Need Apply Overwhelming statistics over many years say odds favor affirming refusal With 2(d), doubt resolved in favor of prior registrant With most 2(e) issues (and others), doubt resolved in favor of publication, BUT, still hard to prevail 33

34 Tactical v. Practical Bottom line there may be tactical reasons for filing appeal (get Examining Attorney s attention), but.. Practical reasons for dropping it if the Examining Attorney does not relent early in the appeal process, as the chances of success is low thereafter 34

35 Timing & Procedures Rule 2: Timing/Procedure is Often as Important as Substance. 35

36 Understand the Rules! Appeal can only be taken from final refusal or second refusal on same ground A timely notice of appeal must be filed w/in 6 months of final refusal 36

37 Filing a request for reconsideration does not automatically toll time for filing notice of appeal Failure to pay appeal fee by appeal deadline results in dismissal 37

38 Brief due 60 days from filing appeal unless EOT obtained or case is remanded for reconsideration Timely filing of request for reconsideration will toll time for filing appeal brief 38

39 If request for remand to submit new evidence filed after deadline for appeal, unless parties agree, good cause must be shown. Good cause includes 39

40 Evidence not previously available New counsel or new examining attorney has taken over case Both sides agree to remand for new evidence 40

41 Oral Argument Must be timely requested (10 days after last brief) Important if you have something to add or clarify within bounds of record (such as explaining complicated technology) Not so important if case is not complicated 41

42 The Record on Appeal Rule 3: Argument is no substitute for evidence. Make sure you have prepared evidentiary record in advance of appeal Remember that type of evidence you need varies according to issues on appeal 42

43 Non-Traditional TM Issues Configurations, trade dress, etc. will generally face higher standard of scrutiny Prepare evidentiary record accordingly Focus on demonstrating the public recognizes configuration, etc. as a mark 43

44 Strategies for Winning Plan your strategy carefully and be flexible in your approach 44

45 Sec. 2(e) Pleading in the Alternative Don t be afraid to argue that mark is inherently distinctive while also offering evidence of 2(f) distinctiveness and/or suitability for Supplemental Register 45

46 Settlement Opportunities Always look for opportunities to settle Examining Attorney may be more amenable once it is clear that appeal is going to go through to completion If new evidence arises, bring it Examining Attorney s attention (even if you can t get it in record) 46

47 Look for Procedural Opportunities If Examining Attorney fails to object to untimely evidence, and/or addresses in his brief, it may be considered by the Board even though not timely filed Don t rely on this happening, but use it if the opportunity presents itself 47

48 Don t waste time On weak arguments Likely will be ignored and may affect your credibility 48

49 Don t make arguments Based on evidence not in record Again, the argument likely won t be considered and you may lose credibility 49

50 Avoid Trying the Board s Patience! Don t ignore Board s orders (e.g., don t attach evidence Board has refused to consider as appendix to your brief) Avoid invective and name calling in your brief 50

51 Remember Even the rare strong case on appeal can be lost if procedures are not followed Understanding rules and procedures can make difference between success and failure 51

52 THANK YOU! For questions, please contact: Helen Hill Minsker Banner & Witcoff, Ltd. 52

53 Presented by: Jess M. Collen

54 15 U.S.C (Lanham Act 21) o 1071(b)(1) Whenever a person authorized by subsection (a) of this section to appeal to the United States Court of Appeals for the Federal Circuit is dissatisfied with the decision of the Director or Trademark Trial and Appeal Board, said person may, unless appeal has been taken to said United States Court of Appeals for the Federal Circuit, have remedy by a civil action

55 37 C.F.R (c) Any person who may appeal to the U.S. Court of Appeals for the Federal Circuit (paragraph (a) of this section), may have remedy by civil action under section 21(b) of the Act. Such civil action must be commenced within the time specified in paragraph (d) of this section. Timing same as an appeal to the CAFC 55

56 Federal Venue Statute 28 U.S.C. 1391(b) a judicial district in which any defendant resides, if all defendants are residents of the State in which the district is located a judicial district in which a substantial part of the events or omissions giving rise to the claim occurred, or a substantial part of property that is the subject of the action is situated; or if there is no district in which an action may otherwise be brought as provided in this section, any judicial district in which any defendant is subject to the court's personal jurisdiction with respect to such action 56

57 15 U.S.C. 1071(b)(4) (Lanham Act 21(b)(4)) If there are adverse parties residing in a plurality of districts not embraced within the same State, or an adverse party residing in a foreign country, the United States District Court for the Eastern District of Virginia shall have jurisdiction

58 McCarthy s says proper venue of a suit against the Director of the USPTO is before the U.S. District Court in the Eastern District of Virginia. District Court appeals from ex parte rejections must be filed in the Eastern District of Virginia. 3 McCarthy on Trademarks and Unfair Competition 21:25 (4th ed.) McCarthy s cites one appeal from the TTAB where a change of venue from the District of DC to the Eastern District of VA was not opposed (Glendale Intern. Corp. v. U.S. Patent & Trademark Office, 374 F. Supp. 2d 479, 75 U.S.P.Q.2d 1139 (E.D. Va. 2005)) and also cites other non-ttab cases (Boundy v. U.S. Patent and Trademark Office, 2002 WL (D.D.C. 2002) (transferring petitions for review of the patent examiner s procedures from the DC District court to the Eastern District of Virginia); In re Munson, 2003 WL (D.C. Cir. 2003) (discrimination case against the PTO); U.S. ex rel. Prevensik v. U.S. Patent & Trademark Office, 2005 WL (D.D.C. 2005) (suit against the PTO and its employees)) However, note, Adams below was decided in the Western District of Pennsylvania and the opinion says that venue was proper under

59 Parties may submit new evidence and raise new issues with the District Court Appellate review of District Court s decision by the Circuit Court Costs associated with a new trial (pleadings, discovery, motion practice) Deference given to TTAB if no new evidence or issues are presented 59

60 Circuit s precedent and splits of authority Likelihood of confusion Fourth Circuit likelihood of confusion is a factual issue Petro Shopping Ctrs., L.P., v. James River Petroleum, Inc., 130 F.3d 88, 92 (4th Cir. 1997) Federal Circuit likelihood of confusion is a legal determination Coach Svcs., Inc. v. Triumph Learning, LLC, 668 F.3d 1356, (Fed. Cir. 2012), i.e., de novo review Trial by jury DC Circuit and District of MD trial by jury for all factual issues ED PA and SD IL no right to trial by jury 60

61 District Court reviews TTAB findings: De novo if new evidence is submitted In sum, where new evidence is submitted, de novo review of the entire record is required because the district court cannot meaningfully defer to the PTO's factual findings if the PTO considered a different set of facts. Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150, 156 (4th Cir. 2014) (citing Kappos v. Hyatt, 132 S. Ct. 1690, 1700 (2012)) Substantial evidence standard when new evidence is not submitted, TTAB findings are given great weight and only disturbed in cases where the findings are not supported by substantial evidence 61

62 Adams Mfg. Corp. v. Rea, 2014 U.S. Dist. LEXIS (W.D. of Pa. March 12, 2014) Applicant, Adams Mfg. Corp. applied to register a suction cup mark in connection with plastic suction cups, not for medical purposes : The examining attorney refused the registration based on functionality and non-distinctiveness. Adams appealed to the Western District of PA. The parties cross moved for summary judgment on the issue of registrability. Adams submitted additional evidence; the Court affirmed the refusal based on functionality 62

63 Timex Group USA, Inc. v. Focarino, 2013 U.S. Dist. LEXIS (E.D. Va. Dec. 17, 2013) (clarified by Timex Group USA, Inc. v. Focarino, 2014 U.S. Dist. LEXIS 4646 (E.D. Va., Jan. 13, 2014)). Timex Group USA, Inc. appealed to the Eastern District of VA the TTAB s refusal to register the INTELLIGENT QUARTZ trademark in connection with watches on the basis that the trademark was descriptive Timex submitted additional evidence that the trademark was suggestive. The Court applied the old standard of review (review of the TTAB record for substantial evidence and review of the new evidence de novo) and found that the TTAB erred in finding that the trademark was suggestive. Three weeks after the Timex decision was issued, the 4 th Circuit issued its opinion in Swatch AG v. Beehive Wholesale, LLC, which changed the standard of review to de novo review of the entire record. The Timex Court then issued a clarification of the decision saying that, under the new standard the trademark would still be found suggestive 63

64 Shammas v. Rea, 978 F. Supp. 2d 599 (E.D. Va. 2013). Shammas appealed the TTAB s refusal to register the PROBIOTIC trademark in connection with fertilizer. The TTAB affirmed the refusal based on genericism. The Court applied the old standard of review and found that the Board s decision was based on substantial evidence and the parties additional evidence showed that PROBIOTIC was generic. The Court affirmed the refusal 64

65 Glendale Int'l Corp. v. United States PTO, 374 F. Supp. 2d 479 (E.D. Va. 2005). An appeal from the refusal to register the TITANIUM trademark in connection with recreational vehicles on the basis that it was deceptively misdescriptive because the vehicles did not contain titanium. The parties stipulated not to submit additional evidence. The Court found that there was substantial evidence that consumers would likely believe that the goods contain titanium. 65

66 Jess M. Collen Ph Collen IP 66

67 Appeals From The TTAB To The CAFC John L. Welch

68 Choices An applicant that is dissatisfied with the final decision of the Board has two options for obtaining review of the decision: 1. Appeal to the United States Court of Appeals for the Federal Circuit 2. Civil action in a United States District Court for review 68

69 CAFC The CAFC is the Board s primary reviewing court. The CAFC limits its review to the record developed before the TTAB. No new evidence may be submitted and no new issues raised. 69

70 Waiver An applicant who takes an appeal to the CAFC waives its right to proceed by way of civil action. It may be possible to withdraw that appeal prior to expiration of the appeal period, and then proceed in district court. 70

71 Timing Notice of appeal must be filed with the USPTO within two months of the Board s decision. The USPTO may grant extensions of time for the filing of the appeal, for good cause, or, if after the appeal period has expired, upon a showing of excusable neglect. 71

72 Timing A request for rehearing, reconsideration, or modification of the Board s decision stays the time for filing the notice of appeal, which will then be due two months after action on the request. 72

73 Timing Simultaneously with the filing of the notice of appeal, three copies of the notice of must be sent to the clerk of the CAFC, along with the appeal fee ($450). The appeal will be docketed by the CAFC when the USPTO sends the certified list of contents of the record before the Board and a copy of the decision being appealed (within 40 days of the notice of appeal). 73

74 Standard of Review Factual issues are reviewed under a substantial evidence standard. The court must ask whether a reasonable person might find that the evidence supports the Board s conclusion. Questions of law are reviewed de novo i.e., without deference. 74

75 Particular Issues Most issues decided by the Board in ex parte cases are factual issues, reviewed under the substantial evidence standard. Likelihood of confusion, however, is a legal conclusion, based on underlying facts. 75

76 Likelihood of Confusion The CAFC reviews the underlying factual findings (the du Pont factors) under the substantial evidence standard. The ultimate conclusion of likelihood of confusion is reviewed on a de novo basis. 76

77 Likelihood of Confusion Example: In re St. Helena Hospital, 113 USPQ2d 1082 (Fed. Cir. 2014). The CAFC reversed TTAB: TAKETEN for health care services not confusingly similar to the registered mark TAKE 10! for printed materials dealing with physical activity and physical fitness. 77

78 Likelihood of Confusion The Board s finding that the marks were similar was supported by substantial evidence The finding as to relatedness of the goods/services was not supported by substantial evidence. The Board s determination that the factor of consumer care was neutral lacked substantial evidence. 78

79 Other Issues of Fact Genericness, distinctiveness, descriptiveness, arbitrary or fanciful Eligibility for Supplemental Register (i.e., capability to function as a trademark). Misdescriptiveness 79

80 Other Issues of Fact Functionality Geographic descriptiveness, misdescriptiveness, and deceptiveness. Priority determinations 80

81 In re Newbridge Cutlery Co. Reversing a Section 2(e)(2) refusal to register NEWBRIDGE HOME for cutlery, the CAFC ruled that "[t]he conclusion that Newbridge, Ireland, a town of less than twenty thousand people, is a place known generally to the relevant American public is not supported by substantial evidence." 81

82 Other Issues of Fact Material alteration of mark Primarily a surname Abandonment 82

83 Issues of Law Equivalence and tacking (?) Scandalousness (In re Fox). Issue and Claim Preclusion Section 2(b) governmental insignia 83

84 In re Houston and District of Columbia CAFC, in upholding the TTAB s affirmance of the USPTO s Section 2(b) refusals to register the governmental seals of the District of Columbia and the City of Houston: We review the Board s legal conclusions, including its interpretation of the Lanham Act, without deference. 84

85 Briefs and Oral Argument Appellant s brief is due sixty days after the USPTO serves the certified list of the record. Appellee has 40 days to file its brief after appellant s brief is filed. A reply brief may be filed within 14 days. 85

86 Briefs and Oral Argument The appendix to the briefs must be filed by the appellant within seven days after the last brief is served and filed. The CAFC generally allows oral argument. The maximum time allowed is 30 minutes per side. Typically each side gets 15 minutes. 86

87 In re Tam Notice of Appeal Docketed by CAFC Opening brief (after extension) USPTO brief (after extensions) Reply brief Joint Appendix Oral argument 87

88 CAFC or District Court? If the issue on appeal is one of fact, the applicant must consider that the CAFC will review the issue on a substantial evidence standard. But the ruling on likelihood of confusion is reviewed on a de novo basis. 88

89 CAFC or District Court? CAFC appeal is on a closed record, so expenses may be kept down. District Court judge may give more deference to a TTAB ruling. 89

90 Some Recent CAFC Decisions In re Newbridge Cutlery Co. [NEWBRIDGE HOME]: Section 2(e)(2) geographical descriptiveness Reversed. (2015). In re St. Helena Hospital [TAKETEN]: Section 2(d) Reversed (2014). 90

91 Some Recent CAFC Decisions In re Nordic Naturals, Inc. [CHILDREN S DHA]: Genericness Affirmed (2014). In re Geller [STOP THE ISLAMISATION OF AMERICA]: Section 2(a) disparagement Affirmed (2014). 91

92 Some Recent CAFC Decisions In re Houston and D.C. [Governmental Seals]: Section 2(b) Affirmed. (2012). In re Fox [C&%$ SUCK&%]: Section 2(a) scandalousness Affirmed. (2012). 92

93 Some Recent CAFC Decisions In re Miracle Tuesday, LLC [JPK PARIS & Design]: Section 2(e)(3) Affirmed (2012). In re Viterra, Inc. [XCEED]: Section 2(d) Affirmed (2012). In re Chamber of Commerce [CHAMBER OF COMMERCE]: Section 2(e)(1) mere descriptiveness Affirmed (2012) 93

94 Some Recent CAFC Decisions In re Becton, Dickinson Miracle [Tube closure cap]: Section 2(e)(5) Affirmed. (2012). In re Chippendales USA, Inc.: Inherent Distinctiveness Affirmed (2010). In re Mighty Leaf Tea [ML]: Section 2(d) Affirmed (2010). 94

95 John L. Welch